DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Also, it should be noted that the applicant’s specification appears to reference many pieces of relevant art, but no copy and/or details have been given with which the examiner is able to locate the art. In addition, the applicant’s specification appears to lack a bibliography that features complete citations of the referenced art. Examples of referenced art, in the specification, that is not officially attached/cited include:
Tissot & Welte (paragraph 0004)
WO 83/03676 (paragraph 0015)
WO 2019090170 (paragraph 0018)
WO 2018200521 (paragraph 0021)
WO 2020257277 (paragraph 0024)
The 2011 doctoral thesis of inventor Boniek Gontijo Vas (paragraph 0026)
Oldenburg et al (paragraph 0032)
Rocha et al (paragraph 0033)
Covas et al (paragraph 0033)
Noah et al (paragraph 0034)
It is suggested that a proper IDS be filed, with copies of the relevant cited art.
Drawings
The drawings filed on 09/28/23 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 is considered indefinite for a number of reasons:
Line 2 discloses, “ultra-high resolution,” but no definition or details are given as to what constitutes “ultra-high”. The scope of the claims are therefore unclear. For the purposes of examination, the examiner will construe any teaching, that could be reasonably construed by one of ordinary skill in the art to be “high-resolution” relative to some other standard, to anticipate the claimed limitation.
Line 3 states, “(a) preparing the oil sample by dissolving the same in toluene/methanol …” The use of “toluene/methanol” is considered indefinite for a number of reasons. It is not clear whether the claim is asserting that toluene and methanol are the same thing or equivalent replacements, such that only one is needed as a dissolving solution, or whether the dissolving solution contains both toluene and methanol. Because the phrasing of the term renders the scope of the claims unclear, the limitation is considered indefinite. For the purposes of examination, the examiner will interpret any combination of toluene and/or methanol in the prior art to anticipate the claimed limitation.
Line 8 discloses, “Composer software,” and line 9 discloses, “Thanus software.” However, the claims do not define what this software is. Is it proprietary consumer software? If so, it should be noted that under broadest reasonable interpretation (BRI), the examiner does not read in any unclaimed particulars of proprietary products into the claims. Also, proprietary consumer software may have many different versions and functionalities, and a general reference to such software would render the scope of the claims unclear, as it would be impossible to distinguish the particular versions and functionalities that apply to the claims. The examiner suggests that if there is a specific functionality being performed by the software, such specific functionality should be explicitly claimed and positively recited, rather than relying on a general trade name to distinguish the software. For the purposes of examination, the examiner will construe any software that is able to perform the claimed functions to anticipate the claimed limitations.
Line 11 discloses “DBE x CN” but does not give context to what DBE and CN are. The examiner suggests defining the terms before using their abbreviation.
Line 12 discloses a calculation term of (Q1+Q4)/(Q1+Q2+Q3+Q4+Q5+Q6+Q7+Q8). However, it does not define what the variables represent. The scope of the calculation is therefore unclear. For the purposes of examination, any type of calculation that results in the claimed desired output will be construed to anticipate the limitation.
Appropriate correction is required.
Examiner’s Note - 35 USC § 101
Claim 19 qualifies as eligible subject matter under 35 U.S.C. 101.
Under step 2A, prong one, the limitation of, “(f) analyzing the images of the DBE x CN graph to obtain the second thermal evolution index (TEI) calculated by (Q1+Q4)/(Q1+Q2+Q3+Q4+Q5+Q6+Q7+Q8) arguably recites abstract mathematical concepts.
However, under step 2A, prong two, the following limitations recite additional elements that integrate the judicial exception into a practical application:
(a) preparing the oil sample by dissolving the same in toluene/methanol (This limitation is indicative of integration into a practical application because it effects a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)). Here, the oil sample is transformed into a dissolved state.)
(b) analyzing the oil solution prepared in step (a) by the atmospheric pressure photoionization (APPI) technique combined with Fourier transform ion cyclotron resonance mass spectrometry (FT-ICR MS) (This limitation is indicative of integration into a practical application because the atmospheric pressure photoionization (APPI) technique and Fourier transform ion cyclotron resonance mass spectrometry (FT-ICR MS) are known by one of ordinary skill in the art to be particular operations/techniques that are carried out by a particular machine. They therefore apply the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)).)
Claim 19 is therefore not directed to a judicial exception. It qualifies as eligible subject matter under 35 U.S.C. 101.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al NPL (Liu, P.; Shi, Q.; Chung, K.; Zhang, Y.; Pan, N.; Zhao, S.; and Xu, C. – “Molecular Characterization of Sulfur Compounds in Venezuela Crude Oil and Its SARA Fractions by Electrospray Ionization Fourier Transform Ion Cyclotron Resonance Mass Spectrometry”; Energy Fuels 2010, 24, 5089-5096.). Please note Smith et al NPL (Smith, D.; Rodgers, R.; Rahimi, P.; Teclemariam, A.; and Marshall, A. – “Effect of Thermal Treatment on Acidic Organic Species from Athabasca Bitumen Heavy Vacuum Gas Oil, Analyzed by Negative-Ion Electrospray Fourier Transform Ion Cyclotron Resonance (FT-ICR) Mass Spectrometry”; Energy & Fuels 2009, 23, 314-319). Please note that Smith et al NPL is incorporated by reference into Liu et al NPL (see reference (21) on page 5090, column 1 of Liu et al NPL).
With respect to claim 19, Liu et al NPL discloses:
A method by ultra-high resolution mass spectrometry (page 5090, column 1, paragraph 1 states, “The ultrahigh resolution and mass accuracy of FT-ICR MS enables the assignment of a unique elemental composition to each peak in the mass spectrum of a petroleum sample.”)
(a) preparing the oil sample by dissolving the same in toluene/methanol (page 5091, column 2, paragraph 1 states, “A total of 5 µL of sulfonium salt solution was diluted with 1 mL of toluene/methanol/dichloromethane …”; The use of toluene was further discussed throughout the disclosure of page 5091, column 1.)
(b) analyzing the oil solution prepared in step (a) by the atmospheric pressure photoionization (APPI) technique combined with Fourier transform ion cyclotron resonance mass spectrometry (FT-ICR MS) (APPI and FT-ICR MS are disclosed together on page 5090, column 2, paragraph 1.)
(c) processing the spectrum (see various figures, which show the results of processing the spectrum; page 5095, column 2, paragraph 2 also states, “These species have been identified … by negative-ion ESI FT-ICR mass spectrum analysis.”)
(d) assigning molecular formulas by Composer software to the detected signals (page 5091, column 2, paragraph 3 discloses, “Data analysis was performed using custom software …”; page 5089, column 2, paragraph 1 states, “Recently, positive and negative ion electrospray coupled with Fourier transform ion cyclotron resonance mass spectrometry (FT-ICR MS) has been applied … These studies reveal detailed molecular composition …”)
(e) analyzing and interpreting the graphical data by Thanus software (page 5091, column 2, paragraph 3 discloses, “Data analysis was performed using custom software …”; see figures, such as figure 4, for graphical data)
(f) analyzing the images of the DBE x CN graph (figure 4 shows plots of DBE versus carbon number)
With respect to claim 19, Liu et al NPL differs from the claimed invention in that it does not explicitly disclose:
for evaluating the thermal evolution of crude oils from different origins
to obtain the first index, which is calculated by the ratio of dibenzothiophene (DBT)/benzothiophene (BT)
to obtain the second thermal evolution index (TEI) calculated by (Q1+Q4)/(Q1+Q2+Q3+Q4+Q5+Q6+Q7+Q8)
With respect to claim 19, the following limitations are obvious in view of the total teachings of Liu et al NPL:
for evaluating the thermal evolution of crude oils from different origins (The main body of Liu et al NPL does not explicitly disclose evaluating the thermal evolution of crude oils from different origins. However, as discussed above, Liu et al NPL incorporates Smith et al NPL by reference. Smith is directed to evaluating the effect of thermal treatment, which broadly serves as an evaluation of thermal evolution under broadest reasonable interpretation (BRI). Smith et al NPL also incorporates various relevant references, such as Hughey et al NPL, which is directed to “Identification of acidic NSO compounds in crude oils of different geochemical origins by negative ion electrospray Fourier transform ion cyclotron resonance mass spectrometry.” (see reference (20) on page 315, column 1 of Smith et al NPL).)
to obtain the first index, which is calculated by the ratio of dibenzothiophene (DBT)/benzothiophene (BT) (Although Liu et al NPL does not explicitly use the language of calculating a ratio of dibenzothiophene (DBT)/benzothiophene (BT), page 5095, column 1, paragraph 1 discloses various DBE and carbon number values, relating to dibenzothiophene (DBT)/benzothiophene (BT) structures. It would be mathematically obvious to one of ordinary skill in the art to calculate a ratio of dibenzothiophene (DBT)/benzothiophene (BT), where the data to do so is available and provided by the results of the analysis. Taking a ratio between different points of known data is mathematically obvious.)
to obtain the second thermal evolution index (TEI) calculated by (Q1+Q4)/(Q1+Q2+Q3+Q4+Q5+Q6+Q7+Q8) (obvious for reasons similar to those given in the preceding limitation; Liu et al teaches the DBE and carbon number values and also shows the data in graphs. Making various general calculations, based on known data, is obvious.
With respect to claim 19, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to incorporate the teachings of Liu et al NPL. The motivation for the skilled artisan in doing so is to gain the benefit of improved molecular characterization, with high resolution and greater accuracy.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Qian et al (US PgPub 20140231641) discloses generation of model of composition of petroleum by high resolution mass spectrometry and associated analytics.
Qian et al (US PgPub 20120153139) discloses generation of model-of-composition of petroleum by high resolution mass spectrometry and associated analytics.
Rathsack, P.; Kroll, M.; and Otto, M. – “Analysis of high molecular compounds in pyrolysis liquids from a german brown coal by FT-ICR-MS”; Fuel 115 (2014) 461-468.
Washburn (US PgPub 20150323516) discloses a method and system for spatially resolved geochemical characterization.
Rovani, Jr. et al (US PgPub 10662384) discloses methods for analyzing hydrocarbons and hydrocarbon blends for chemical compositions.
Rovani, Jr. et al (US Pat 10449502) discloses methods for analyzing hydrocarbons and hydrocarbon blends for chemical compositions.
Muller et al (US PgPub 20200400645) discloses a system and method of characterizing crude oil and its derivatives by combining total sulfur determination and FT-ICR mass spectrometry.
Lamberti et al (US PgPub 20130037707) discloses a measurement of isotope ratios in complex matrices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEONARD S LIANG whose telephone number is (571)272-2148. The examiner can normally be reached M-F 10:00 AM - 7 PM.
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/LEONARD S LIANG/Examiner, Art Unit 2857 06/27/26
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